Ex Parte Zhou

Patent Trial and Appeal Board

Feb 28, 2019

14629066 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/629,066 02/23/2015
12684 7590 03/04/2019
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
FIRST NAMED INVENTOR
Yuan Zhou
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
004672-03499Z-US 7206
EXAMINER
OYEBISI, OJO 0
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
03/04/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail@lsk-iplaw.com
docket-us@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUAN ZHOU
Appeal 2017-011437
Application 14/629,066
Technology Center 3600
Before MARC S. HOFF, JENNIFER L. McKEOWN, and
CARLL. SILVERMAN, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 21-30. We have jurisdiction under 35 U.S.C. § 6.
We reverse.
1 According to Appellant, the real party in interest is Chicago Mercantile
Exchange Inc. App. Br. 2.
Appeal 2017-011437
Application 14/629,066
STATEMENT OF THE CASE
Appellant's disclosed and claimed invention "relates to the electronic
trading of financial instruments." Spec. p. 1, 1. 8. More specifically, the
claimed invention is directed to "user interfaces that display information to a
user on a display of a PDA, computer or other device." Spec. p.1, 11. 8-9.
Claim 21 is illustrative of the claimed invention and reads as follows:
21. A computer-implemented method for dynamically
changing the state of a graphical user interface, the method
compnsmg:
(a) dynamically displaying market depth information for a
financial instrument based on the market data transmitted by the
exchange computer system;
(b) monitoring a state of a lock command from the user interface
to determine when a lock icon has been selected;
( c) when a lock command has been received, processing the lock
command at a processor and temporarily halting updates to the
market depth information;
( d) receiving at the graphical user interface an order for the
financial instrument; and
( e) in response to ( d) automatically resuming updates to the
market depth information.
THE REJECTION
The Examiner rejected claims 21-30 under 35 U.S.C. § 103 as
directed to patent ineligible subject matter. Final Act. 2-5.
ANALYSIS
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 21-30 as directed to patent ineligible subject
matter.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
section 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
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Application 14/629,066
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a)-(c), (e)-(h) (9th Ed., Rev. 08.2017, Jan. 2018)).
See Memorandum at 52, 55-56. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum at 56.
The Examiner determines that the claimed invention here is directed
to an abstract idea. Namely "the claims are directed towards the abstract
idea of entering orders for financial instruments. Entering orders for
financial instruments is a fundamental economic practice; and as a result,
claims 21-30 include an abstract idea." Final Act. 3. The Examiner
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additionally determines that the claims do not add significantly more to the
alleged abstract idea. Final Act. 3.
Appellant argues that, even if the claims are directed to alleged
abstract idea of entering orders for financial instruments, the claimed
invention adds significantly more to the alleged abstract idea. Br. 10, 13.
For example, Appellant asserts that the claimed invention "include features
that add details other than what is well understood, routine and
conventional." Br. 13. Namely, according to Appellant, the claimed
invention,
add[ s] unconventional steps that confine the claim to a particular
useful application, namely monitoring a state of a lock command
for the user interface to determine when a lock icon has been
selected, and when a lock command has been received,
processing the lock command at a processor and temporarily
halting updated to the market depth information.
Br. 13. Appellant further supports this argument by pointing to the
Specification's discussion of the lock feature. Br. 14--15.
Based on the record before us, we are persuaded of error in the
Examiner's determination. Even assuming that the invention is directed to
an abstract idea of submitting financial orders, the Examiner fails to consider
the additional limitations of monitoring the lock status through the graphical
user interface, stopping the dynamic updating of market depth information
based on the lock status, and then automatically returning to updating the
market depth information and, specifically, fails to consider whether these
limitations add significantly more to the alleged abstract idea as argued by
Appellant. See Br. 13; see also Final Act. 3--4 ( asserting that the claims are
directed towards entering orders for financial instruments and generally
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asserting that the claims do not include significantly more than the abstract
idea); see also Ans. 5 (generally asserting that receiving, processing,
calculating, transmitting and displaying information are well-understand,
routine, and conventional activities without further explanation or support).
As such, based on the record before us, we are persuaded that the Examiner
fails to sufficiently support the determination that the claimed invention is
directed to ineligible subject matter. See Berkheimer v. HP Inc., 881 F.3d
13 60 (Fed. Cir. 2018). Because our analysis of whether these limitations
add significantly more to the alleged abstract idea is dispositive, we need not
consider other arguments presented by Appellant.
Accordingly, we reverse the Examiner's decision to reject claims 21-
30 as directed to patent ineligible subject matter.
DECISION
We reverse the Examiner's decision to reject claims 21-30.
REVERSED
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